DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception, such as abstract ideas like mathematical calculations and mental processes, without significantly more.
Each of the claims 1-20 have been analyzed to determine if the claims are directed to any judicial exceptions.
Step 2A, Prong 1 per MPEP 2106.04(a)
Each of the claims 1-20 recite steps or instructions for observations, judgements or evaluations, and mathematical calculations, which are grouped as mental processes in MPEP 2106.04(a)(2)(III) or mathematical concepts in MPEP 2106.04(a)(2)(I). Accordingly, claims 1-20 each recites an abstract idea.
First, claim 1 recites a system comprising:
a processor (additional element); and
a memory storing data thereon, that when processed by the processor, enable the processor to (additional element);
receive an image depicting an anatomical element (additional element-extra solution activity, e.g. gathering data);
segment the image into a segmented image that includes a plurality of voxels (evaluation or judgement and/or mathematical concept, which is a mental process);
track a portion of a surgical instrument as the portion of the surgical instrument interacts with the anatomical element (evaluation of judgement, which is a mental process);
identify, based on the tracking, an area from the segmented image representative of a section of the anatomical element that interacts with the portion of the surgical instrument (evaluation or judgement, which is a mental process)
modifying one or more voxels from the plurality of voxels that reside within the area identified from the segmented image as being representative of the section of the anatomical element that interacts with the portion of the surgical instrument (additional element-extra solution activity, e.g. displaying data); and
render, to a display, the segmented image showing the modified one or more voxels (additional element-extra solution activity, e.g. sending or displaying data)
Second, claim 8 recites a system comprising:
a processor (additional element); and
a memory coupled with the processor and storing data thereon that, when processed by the processor, enable the processor to (additional element):
receive a segmented image depicting an anatomical element segmented into a plurality of voxels (additional element-extra solution activity, e.g. gathering data);
render, to a display, the segmented image (additional element-extra solution activity, e.g. displaying data);
track a surgical tool as the surgical tool interacts with the anatomical element (evaluation or judgement, which is a mental process)
determine, based on the tracking, a voxel of the plurality of voxels representative of a portion of the anatomical element that interacts with the surgical tool (evaluation or judgement, which is a mental process)\
update a visual depiction of the voxel shown in the segmented image on the display (additional element-extra solution activity, e.g. sending or displaying data)
Third, claim 16 recites a system comprising:
a processor (additional element);
a memory coupled with the processor and storing data thereon that, when processed by the processor, enable the processor to (additional element);
receive image data associated with an anatomical element (additional element-extra solution activity, e.g. gathering data);
segment the image data into a plurality of voxels (evaluation or judgement and/or mathematical concept, which is a mental process);
render, to a display, a visual depiction of the plurality of voxels (additional element-extra solution activity, e.g. displaying data);
track an operative portion of a surgical instrument as the operative portion of the surgical instrument interacts with the anatomical element (evaluation or judgment, which is a mental process),
identify, based on the tracking, a voxel of the plurality of voxels associated with the operative portion of the surgical instrument (evaluation or judgement, which is a mental process);
render, based on the tracking, an updated visual depiction of the image data that includes a modified version of the voxel (additional element-extra solution activity, e.g. sending or displaying data)
As indicated above, each of the independent claims and their respective dependent claims recites at least one step or instruction involving a judgement or evaluation and/or mathematical calculation. Therefore, each of the claims recites an abstract idea.
Furthermore, dependent claims 2-7, 9-15, and 17-20 merely include limitations that either define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to nothing more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the claimed functions/steps are performed.
Accordingly, as indicated above, each of the above-mentioned claims recites an abstract idea as in MPEP 21-6.04(a).
Step 2A, Prong 2 per MPEP 2106.04(d)
The above-identified abstract ideas in each of independent claims 1, 8, and 16 and their respective dependent claims are not integrated into a practical application under MPEP 2106.04(d) because the additional elements of a processor, a memory, receive an image depicting an anatomical element, modifying one or more voxels from the plurality of voxels that reside within the area identified from the segmented image as being representative of the section of the anatomical element that interacts with the portion of the surgical instrument, and the render, to a display, the segmented image showing the modified one or more voxels of claim 1, the additional elements of a processor, a memory, receiving a segmented image depicting an anatomical element segmented into a plurality of voxels, rendering, to a display, the segmented image, and updating a visual depiction of the voxel shown in the segmented image on the display of claim 8, and the additional elements of a processor, a memory, receiving image data associated with an anatomical element, rendering, to a display, a visual depiction of the plurality of voxels, and rendering, based on the tracking, an updated visual depiction of the image data that includes a modified version of the voxel of claim 16 and the respective dependent claims are generically recited computer elements which do not improve the function of a computer or any other technology or technical field according to the MPEP 2106.04(d)(1) and 2106.05(a). The above-identified additional elements, either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use according to MPEP 2106.05(h) or represent insignificant extra-solution activity according to MPEP 2106.05(g). Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine according to MPEP 2106.05(b), effect a transformation according to MPEP 2106.05(c), provide a particular treatment or prophylaxis according to MPEP 2106.04(d)(2) or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claims as a while is more than a drafting effort designed to monopolize the exception according to MPEP 2106.04(d)(2) and 2106.05(e). Furthermore, the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer in accordance with MPEP 2106.05(f). For at least these reasons, the abstract idea identified above in independent claims 1, 8, and 16 (and their respective dependent claims) is not integrated into a practical application in accordance with MPEP 2106.04(d).
Moreover, the above-identified abstract idea is not integrated into a practical application in accordance with MPEP 2106.04(d) because the claimed systems merely implements the above-identified abstract idea (e.g. mental processes and mathematical concept) using rules (e.g. computer instructions) executed by a computer (e.g. processor and memory as claimed). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because the amount to simply implementing the abstract idea on a computer according to MPEP 2106.05(f). Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims according to MPEP 2106.05(a). That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement of solution. Thus, for these additional reasons, the abstract idea identified above in independent claims 1, 8, and 16 (and their respective dependent claims) is not integrated into a practical application under MPEP 2106.04(d)(I).
Accordingly, independent claims 1, 8, and 16 (and their respective dependent claims) are each directed to an abstract idea according to MPEP 21-6.04(d).
Step 2B per MPEP 2106.05
Claims 1-20 do not include additional elements that are sufficient to amount to significantly more than the abstract ideas in accordance with MPEP 2106.05 for at least the following reasons:
Claims 1-20 require the additional elements of a processor and a memory. These additional elements are generically claimed computer components which enable the above-identified abstract ideas to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well understood, routing, and conventions functions when claimed in a merely generic manner (e.g. at a high level of generality) or as insignificant extra-solution activity. See MPEP 2106.05(d)(II) along with Versata Dev. Group, Inc. v. SAP AM., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Per the Applicant’s specification, the processor is a generic processor, such as general purpose microprocessors (see paragraph 47) and the memory is a generic computer-readable media, such as RAM, ROM, flash memory, etc. (see paragraph 46).
Accordingly, in light of Applicant’s specification, the claimed terms processor and memory are reasonably construed as generic computing devices. Like SAP America vs Investpic, LLC (Federal Circuit 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available technology, with their already available basic functions, to use as tools in executing the claimed process. See MPEP 2106.05(f).
Furthermore, Applicant’s specification does not describe any special programming or algorithms required for the processor or memory. This lack of disclosure is acceptable under 35 U.S.C. 112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the computer arts. By omitting any specialized programming or algorithms, Applicant’s specification essentially admits that this hardware is conventional and performs well understood, routing, and conventional activities in the computer industry or arts. In other words, Applicant’s specification demonstrates the well-understood, routine, and conventional nature of the above-identified additional elements because it describes these additional elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 112(a) (see MPEP 2106.05(d)(I)(2) and 2106.07(a)(III). Adding hardware that performs “well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible (TLI Communications along with MPEP 2106.05(d)(I)).
The recitation of the above-identified additional limitations in claims 1-20 amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g. to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g. a fundamental economic practice or mathematical equation) does not provide significantly mre. See MPEP 2106.05(f) along with Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. See MPEP 2106.05(a) along with McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp. 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology, or technological processes. That is, per MPEP 2106.05(a), the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 253, 1263064, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2106), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
For at least the above reasons, the systems of claims 1-20 are directed to applying an abstract idea as identified above on a general purpose computer without (i) improving the performance of the computer itself or providing a technical solution to a problem in a technical field according to MPEP 2106.05(a), or (ii) providing meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself according to MPEP 2106.04(d)(2) and 2106.05(e).
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent claims 1, 8, and 16 (and their respective dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment according to MPEP 2106.05(h). When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine, and conventional activity specified at a high level of generality in a particular technological environment according to MPEP 2106.05(h). When viewed as whole, the above-identified additional elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself according to MPEP 2106.04(d)(2) and 2106.05(e). Moreover, neither the general computer elements nor any other additional elements represent insignificant extra-solution activity according to MPEP 2106.05(g). As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application as required by MPEP 2106.05.
Therefore, for at least the above reasons, none of claims 1-20 amounts to significantly more than the abstract idea itself. Accordingly, claims 1-20 are not patent eligible and rejected under 35 U.S.C. 101.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1-11 and 14-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brisson (U.S. Publication 2003/0208296).
Regarding claims 1-7:
Brisson discloses a system comprising:
(claim 1) a processor (for example see Figure 5)
(claim 1) a memory (for example see paragraph 114)
(claim 1) wherein the memory stores data thereon that, when processed by the processor, enable the processor to
(claim 1) receive an image depicting an anatomical element (for example see paragraphs 50 and 54)
(claim 1) segment the image into a segmented image that includes a plurality of voxels (for example see paragraphs 52 and 54)
(claim 5) wherein the image is a 2-D or 3-D image (for example see paragraphs 9 and 50)
(claim 1) track a portion of a surgical instrument as the portion of the surgical instrument interacts with the anatomical element (for example see paragraphs 61-66)
(claim 6) wherein the tracking comprises determining a pose of the portion of the surgical instrument relative to the anatomical element as the portion of the surgical instrument interacts with the anatomical element (for example see paragraphs 11, 13, 19, and 24)
(claim 1) identify, based on the tracking, an area from the segmented image representative of a section of the anatomical element that interacts with the portion of the surgical instrument (for example see paragraphs 61-66)
(claim 4) wherein the portion of the surgical instrument is capable of resecting anatomical tissue (for example see paragraph 92)
(claim 1) modify one or more voxels from the plurality of voxels that reside within the area identified from the segmented image as being representative of the section of the anatomical element that interacts with the portion of the surgical instrument (for example see paragraphs 65-67)
(claim 1) render, to a display, the segmented image showing the modified one or more voxels (for example see paragraphs 9, 25-26, 48, 50, 63-64, 76, 79, 82, and 98)
(claim 2) wherein the one or more voxels are rendered with a first visual depiction a first time (for example see paragraphs 9, 10, and 12; for example a waste voxel)
(claim 2) wherein the one or more voxels are rendered with a second visual depiction at a second time later that the first time (for example see paragraphs 9, 10, and 12; for example changing the waste voxel to an empty voxel after the tool interacts with it)
(claim 3) wherein the one or more voxels are rendered with at least one of a different color and a different border than the plurality of voxels (for example see paragraphs 9, 10, 12, and 87)
(claim 7) wherein the modified one or more voxels indicate that the portion of the anatomical element has been resected (for example see paragraphs 9, 10, and 12)
Regarding claims 8-11, 14, and 15:
Brisson discloses a system comprising:
(claim 8) a processor (for example see Figure 5)
(claim 8) a memory coupled to the processor (for example see paragraph 114)
(claim 8) wherein the memory stores data thereon that, when processed by the processor, enable the processor to
(claim 8) receive a segmented image depicting an anatomical element segmented into a plurality of voxels (for example see paragraphs 50, 52, and 54)
(claim 11) wherein the image is a 2-D or 3-D image (for example see paragraphs 9 and 50)
(claim 8) render, to a display, the segmented image (for example see paragraphs 9, 25-26, 48, 50, 63-64, 76, 79, 82, and 98)
(claim 8) track a surgical tool as it interacts with the anatomical element (for example see paragraphs 61-66)
(claim 14) wherein the tracking comprises determining a pose of the surgical tool relative to the anatomical element as the surgical tool interacts with the anatomical element (for example see paragraphs 11, 13, 19, and 24)
(claim 8) determine, based on the tracking, a voxel of the plurality of voxels representative of a portion of the anatomical element that interacts with the surgical tool (for example see paragraphs 61-66)
(claim 8) update, to a display, a voxel of the plurality of voxels representative of a portion of the anatomical element that interacts with the surgical tool (for example see paragraphs 9, 25-26, 48, 50, 63-64, 76, 79, 82, and 98)
(claim 9) wherein the update of the visual depiction of the voxel comprises a change in at least one of a color and a border of the voxel (for example see paragraphs 9, 10, 12, and 87)
(claim 10) wherein the update of the visual depiction of the voxel comprises an indicator that the portion of the anatomical element has been resected (for example see paragraphs 9, 10, and 12)
(claim 15) wherein the update of the visual depiction of the voxel is based on at least one of a type of surgical tool and a surgical workflow (for example resecting the tissue with the cutting tool)
Regarding claims 16-18:
Brisson discloses a system comprising:
(claim 16) a processor (for example see Figure 5)
(claim 16) a memory coupled to the processor (for example see paragraph 114)
(claim 16) wherein the memory stores data thereon that, when processed by the processor, enable the processor to
(claim 16) receive image data associated with an anatomical element
(claim 16) segment the image data into a plurality of voxels (for example see paragraphs 50, 52, and 54)
(claim 16) render, to a display, a visual depiction of the plurality of voxels (for example see paragraphs 9, 25-26, 48, 50, 63-64, 76, 79, 82, and 98)
(claim 16) track an operative portion of a surgical instrument as the operative portion interacts with the anatomical element (for example see paragraphs 61-66)
(claim 17) wherein the operative portion of the surgical instrument is capable of resecting anatomical tissue (for example see paragraph 92)
(claim 16) identify, based on the tracking, a voxel of the plurality of voxels associated with the operative portion of the surgical instrument (for example see paragraphs 61-66)
(claim 16) render, based on the tracking data, an updated visual depiction of the image data that includes a modified version of the voxel (for example see paragraphs 9,10, 12, 25-26, 48, 50, 63-64, 76, 79, 82, 87,and 98)
(claim 18) wherein the modified version of the voxel provides an indicator that a section of the anatomical element has been resected (for example see paragraphs 9, 10, and 12)
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Brisson (U.S. Publication 2003/0208296) in view of Esfandiari (U.S. Publication 2025/0169889).
Brisson discloses the invention as claimed except for the image being received from artificial intelligence data model, such as a convolutional neural network. Esfandiari teaches a system comprising a processor and memory, wherein the memory includes instructions for receiving a segmented image depicting an anatomical element segmented into a plurality of voxels, wherein the image is received from an artificial intelligence data model, such as a convolutional neural network that receives the image data as an input and outputs the segmented image (for example see paragraphs 29 and 90) in order to increase the accuracy of the image data. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Brisson wherein the segmented image data is received from an artificial intelligence data model, such as a convolutional neural network, in view of Esfandiari in order to increase the accuracy of the image data.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Brisson (U.S. Publication 2003/0208296) in view of Walen (U.S. Publication 2022/0338938).
Brisson discloses the invention as claimed except for the modified version of the voxel includes a first visual indicator for a first surgical instrument and a second type of visual indicator for a second surgical instrument. Walen teaches a device comprising a processor and a memory, wherein the memory includes instructions for updating a visual depiction of a voxel with a first visual indicator for a first surgical instrument being used and a second visual indicator for a second surgical instrument being used (i.e. a first target boundary for a drill instrument and a second target boundary for a tap instrument and a third target boundary for a driver instrument; for example see paragraphs 62, 80-87, and 115-125) in order to provide different alerts to the surgeon for each tool. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to provide the device of Brisson wherein the modified version of the voxel includes a first visual indicator for use with a first instrument and a second visual indicator for use with a second instrument in view of Walen in order to provide different alerts to the surgeon for each tool.
Allowable Subject Matter
Claim 20 is objected to as being dependent upon a rejected base claim, but would be allowable over the prior art if rewritten in independent form including all of the limitations of the base claim and any intervening claims. However, claim 20 is rejected under 35 U.S.C. 101 as discussed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for cited references the examiner felt were relevant to the application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas Woodall whose telephone number is (571) 272-5204. The examiner can normally be reached on Monday-Friday 8am to 5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS W WOODALL/Primary Examiner, Art Unit 3775
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